1. The Patent:
Claim 1 of Hedenskoog patent No. 1,714,-310, dated August 11, 1928, discloses a device for controlling the movement of bowling-balls on return ways in bowling-alleys. The trial judge held that it was not infringed by defendant’s device. Having so decided, he held that he could not consider the defense of invalidity or the counterclaim of defendant, American, which sought a declaratory judgment of invalidity.
He was wrong. Even without the defendant’s counterclaim, to hold non-infringement did not preclude a holding of invalidity as an additional ground for decision in favor of a defendant; the public good will usually be served, in such circumstances, by finding invalidity. And to consider that issue was surely proper here, because of the counterclaim asking- a declaratory judgment of invalidity. Altvater v. Freeman, 319 U.S. 359, 363, 63 S.Ct. 1115, 87 L.Ed. 1450.1
We think claim 1 of the patent invalid.2 In Brunswick-Balke-Collender Co. v. National Billiard Supply Co.,3 43 U.S.P.Q. 10, it was held valid despite the Winn patent, No. 499,075, dated June 6, 1893, because the court found that Winn disclosed an inoperative structure and was not anticipatory. We do not agree. The claim in suit reads literally upon Winn, except that in Winn the dashpot actuating lever is located above the ball rather than below it as part of the rail. Without going into details, suffice it to say that, while Hedenskoog reveals some novelty, we think the novelty did not involve inventive ingenuity. Enough was taught by Winn .so that, instructed thereby, a mechanic skilled in the art could easily contrive Hedenskoog’s device. That Winn had never been used commercially is immaterial. Collins v. Emerson, 1 Cir., 82 F.2d 197, 201. We do not think that it was shown to be inoperative.
Moreover, there is present in this record evidence not before the court in the National Billiard Supply case: Plaintiff’s expert here testified that the adjustability of the dashpot exhaust port is “a very essential feature” of the Hedenskoog structure; but neither in the patent specifications nor drawings is there shown aft adjustable exhaust port; indeed the patent describes a fixed exhaust port with no means of controlling or varying its size.
As the patent is invalid, we do not consider the issue of infringement.
2. The trademark and unfair competition:
A majority of the court holds on the following basis, that the defendant infringed plaintiff’s trademark:
Plaintiff’s registered trademark is applied to bowling pins. It “consists of a crown device in red, painted or otherwise impressed around the neck of the pin.” Defendant’s mark was also located at the neck of the pin, was red in color, but consisted of adjacent, touching diamonds, instead of the connected triangular-half-diamond, of the plaintiff. Plaintiff began the use of its mark in 1933 and widely advertised it. It has sold over ten million of its pins so labeled. Defendant adopted its use of the connected red band of diamonds in. 1938. There was evidence that at a distance of 60 to 65 feet, the two bands appeared similar. Plaintiff’s band was on its two top grade pins. These pins sold at higher prices than those of defendant’s. The two marks seem to the majority of the court to be confusingly similar. The identity of color, of location on the pin, of the upper half of the mark — all substantiate the trial court’s *71finding: “We find,the defendant’s device confusingly like the plaintiff’s mark. The defendant’s officers knew it might be thought so when they selected it. There was evidence that their composition of it was not only knowing but intended to create similarity but we decline to find the latter.” Defendant contends that there could be no confusion between the pins because the pins came in boxes with the respective maker’s names clearly on them; that since there was no confusion there could be no infringement; and that no evidence of actual deception was presented.
Upon all the evidence, with all the possible conflicting inferences, the majority of the court feels required to accept the district court’s findings on this disputed fact issue. Indeed the majority considers that finding the correct view of the evidence, believing it in fact impossible to conclude other than that defendant adopted its mark because of its similarity to plaintiff’s, which was used so extensively on plaintiff’s pins.
On this issue I dissent. I think, that, for the following reasons, defendant did not infringe: It is clear, I think, that the purchasers of pins, who are the owners of bowling-alleys, are not confused, for they see the pins at close range where they are clearly distinguishable. I shall assume, purely arguendo, that confusion of users of bowling-alleys, who are not 'purchasers of pins, would be sufficient to .show infringement. But the record evidence shows that in fact they are not confused or likely to be: The ordinary bowler, so the evidence shows, has no preference for Brunswick’s pins. He sees the pins only at the end of the alley, a distance of 60 to 65 feet. At that distance, he cannot distinguish Brunswick’s from American’s marking. A relatively small fraction of bowlers demand Brunswick pins; the only evidence on the subject in the record indicates that such bowlers insist on inspection to ascertain that their demands are satisfied. The evidence, therefore, discloses neither confusion nor likelihood of confusion. It follows that the mark, if valid, was not infringed. By the same token, I should hold that there was no unfair competition.4
3. The Clayton Act violations:
The Federal Trade Commission, on December 7, 1942, in a proceeding against Brunswick, entered a cease and desist order. The Commission, in findings of fact and conclusions of law, held that Brunswick had violated § 3 of the Clayton Act, 15 U.S.C.A. § 14, by the following conduct: Brunswick had organized a promotional plan, known as the “Brunswick Sweepstakes,” in the years 1937 and 1938; this plan consisted of offering prizes to bowlers who entered the “Sweepstakes” and contested therein on bowling-alleys approved by Brunswick for that purpose; Brunswick approved only those alleys the proprietor of which became a subscriber to the “Sweepstakes” plan, which involved a contractual obligation by the proprietor to purchase from Brunswick four sets of its pins and $15.00 worth of bowling-alley equipment for each and every alley in his establishment; such purchases represent the entire equipment as needed by such proprietors for each of the years 1937 and 1938; a considerable number of such proprietors subscribed to that plan in those years.
American, in support of its counterclaim for violation of the Clayton Act, offered a certified copy of the Commission’s order in evidence. The trial judge refused to admit it. The trial court erred. Section 5 of the Clayton Act, 15 U.S.C.A. § 16, provides: “A final judgment or decree rendered in any criminal prosecution or in any suit or proceeding in equity brought by or on behalf of the United States under the antitrust laws to the effect that a defendant has violated said laws shall be prima facie evidence against such defendant in any suit or proceeding brought by any other party against such defendant under said laws as to all matters respecting which said judgment or decree would be an estoppel as between the parties thereto: Provided, This section shall not apply to consent judgments or decrees entered before *72any testimony has been taken.” Before the Act was amended in 1938, a cease and desist order of the Federal Trade Commission did not become operative except after the entry of an enforcing decree by a Court of Appeals; the Commission’s order could not then be regarded as a “judgment” or “decree” within the meaning of § 5. But now that, pursuant to the 1938 amendment,5 a "Commission order becomes final, unless judicial review is sought within a permitted period, such an order, if not reviewed, must be considered a “judgment” or “decree” within § S. Here no review was sought.
The Commission’s order, if admitted in evidence, would have made out a prima facie case for American; moreover there was other supporting evidence. The trial judge erred in not admitting it and in not holding that Brunswick violated the Act.
The witness Kennedy testified that the “Sweepstakes” caused a loss to American in the year 1938. He also gave contrary testimony on cross-examination. He was at one time an officer of plaintiff, then became an officer of defendant, and subsequently became again an officer of plaintiff as he was at the time of the trial. He was thus within the category of a “hostile” witness. In the circumstances, his testimony constitutes sufficient evidence of the fact of defendant’s damage.
To maintain this counterclaim it was not necessary for American to show the amount of damages with particularity.6 There should be a reference to ascertain this figure.
Since Brunswick discontinued its “Sweepstake” a very considerable time before this suit was begun and there is no evidence of a proposal to resume it, the trial judge correctly denied an injunction.7
4. Costs:
The trial judge has discretion as to costs in the trial court. But as our decision changes the situation to favor defendant, the trial judge should reconsider his decision. American, of course, is entitled to costs on this appeal.
Affirmed.
Cf. Airolite Co. v. Fiedler, 2 Cir., 147 F.2d 496. There we held that there was no infringement and also that the patent was invalid.
Although defendant’s counterclaim asserts the invalidity of the entire patent, in its brief here the defendant asked only “the invalidation of claim 1.”
Oral opinion.
I have not considered the validity of the trademark, but I have some doubt on that score. American asserts, inter alia, that the mark is used by Brunswick to distinguish grades of pins and that such use constitutes .abandonment, citing Columbia Mill Co. v. Alcorn, 150 U.S. 460, 463, 14 S.Ct. 151, 37 L.Ed. 1144; Lawrence Mfg. Co. v. Tennessee Mfg. Co., 138 U.S. 537, 547, 11 S.Ct. 396, 34 L.Ed. 997; Amoskeag v. D. Trainer & Sons, 101 U.S. 51, 25 L.Ed. 993; Autoline v. Indian Refining Co., D.C., 3 F.2d 457, 464. Brunswick cites Menendez v. Holt, 128 U.S. 514, 9 S.Ct. 143, 32 L.Ed. 526; Capewell Horse Nail Co. v. Mooney, 2 Cir., 167 F. 575, affirmed 2 Cir., 172 F. 826.
15 U.S.C.A. § 45(g).
Story Parchment Co. v. Paterson Parchment Paper Co., 282 U.S. 555, 563— 565, 51 S.Ct. 248, 75 L.Ed. 544; Package Closure Corporation v. Sealright Co., 2 Cir., 141 F.2d 972; cf. President & Directors of the Manhattan Co. v. Kelby, 2 Cir., 147 F.2d 465.
For the same reason, he correctly rejected ihe “unclean-hands” defense to the infringement claims.